Ex Parte NietoDownload PDFPatent Trial and Appeal BoardJun 22, 201713490016 (P.T.A.B. Jun. 22, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/490,016 06/06/2012 Nery J. Nieto Nieto-Avatar 1772 06/26/201760033 7590 MARK TERRY, ESQ. 801 BRICKELL AVE., SUITE 900 Miami, FL 33131 EXAMINER GARG, YOGESH C ART UNIT PAPER NUMBER 3625 NOTIFICATION DATE DELIVERY MODE 06/26/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): mark@terryfirm.com eofficeaction @ appcoll.com yurie @ terry firm .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NERY J. NIETO Appeal 2016-003520 Application 13/490,016 Technology Center 3600 Before MICHAEL J. STRAUSS, ADAM J. PYONIN, and KARA L. SZPONDOWSKI, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-003520 Application 13/490,016 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b). We affirm and enter new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). THE INVENTION The claims are directed to virtual reality-based environments including user avatars. Spec., Title. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for reviewing items of clothing over a communications network, comprising: receiving an image of a consumer's face; receiving measurements of the consumer's body; generating a three-dimensional avatar of the consumer based on the image and the measurements, wherein the avatar comprises a surface correlating in size with the measurements; generating a three-dimensional virtual reality graphical environment including the avatar of the consumer and three- dimensional virtual items of clothing; receiving a selection from the consumer of a virtual item of clothing comprising a surface that correlates in size to an actual item of clothing; determining whether the surface of the virtual item of clothing fits around a predefined area of the surface of the avatar; wherein if it is determined that the surface of the virtual item of clothing fits around the predefined area of the surface of the avatar, positioning the surface of the virtual item of clothing over the predefined area of the surf ace of the avatar; and displaying the virtual item of clothing over the predefined area of the surface of the avatar for viewing by the consumer; and wherein if it is determined that the surface of the virtual item of clothing does not fit around the predefined area of the 2 Appeal 2016-003520 Application 13/490,016 surface of the avatar, displaying a message to the consumer indicating that the virtual item of clothing does not fit the avatar. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Kunigita US 2002/0107762 A1 Aug. 8, 2002 Moses et al. US 2013/0179288 A1 July 11, 2013 Ho Sun Lim, Three Dimensional Virtual Try-on Technologies in the Achievement and Testing of Fit for Mass Customization (Ph.D. dissertation, North Carolina State University, Raleigh, North Carolina, 2009) (hereinafter “Lim”1). REJECTIONS The Examiner made the following rejections2: Claims 1—7 stand rejected under 35U.S.C. § 101 as directed to non- statutory subject matter. Final Act. 4—7. Claims 1—18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kunigita, Moses, and Lim. Final Act. 7—13. ANALYSIS Non-Statutory Subject Matter We initially note, although the Examiner finds claims 1—7 are directed to non-statutory subject matter under the framework set forth in Alice Corp. Pty Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014) (see Final Act. 4—6), the Examiner has taken the position 1 The Examiner and Appellant refer to the reference as “Ho.” 2 The rejection of claims 8—18 under 35 U.S.C. § 101, has been withdrawn. Final Act. 2. However, for the reasons infra, we re-impose the rejection. 3 Appeal 2016-003520 Application 13/490,016 [i]f claim 1 is amended to recite that the steps of claim 1 are executed by a processor/computer keeping in line with the other two independent claims [8 and 15] and the applicant's Specification then [the] rejection of claims 1—7 under 35 USC 101 will be moot and withdrawn. Final Act. 6—7. The Examiner appears to conflate the four categories of statutory subject matter with the judicial exceptions addressed by the Alice decision. Claim 1 recites a method for reviewing items of clothing over a communication network and, therefore, falls within the process category. However, because we agree with the Examiner’s analysis concluding claim 1 falls within a judicial exception (i.e., an abstract idea), method claim 1 together with Beauregard3 claim 8 and apparatus claim 15 are unpatentable. Under 35U.S.C. § 101, an invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice Corp. 134 S. Ct. at 2354. The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of [these] concepts.” Alice Corp., 134 S. Ct. at 2355. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” {id.), e.g., to an abstract idea. In identifying the abstract idea, we must evaluate “the ‘focus of the claimed advance over the prior art’ to determine 3 See In re Beauregard, 53 F.3d 1583 (Fed. Cir.1995). 4 Appeal 2016-003520 Application 13/490,016 if the claim’s ‘character as a whole’ is directed to excluded subject matter.” Affinity Labs of Tex., LLCv. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). If the claims are not directed to a patent-ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that ‘“transform the nature of the claim’ into a patent-eligible application.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298, 1297). The Court acknowledged in Mayo, that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). Turning to the framework set forth in Alice, and as the first step of that analysis, we agree with the Examiner that the “claims are drawn to the abstract idea of managing reviewing clothing [to determine] if it fits ... a buyer before purchasing it by the buyer and related requirements.” Final Act. 5. Claim 1 includes alternative wherein clauses, one conditional on a determination that the surface of a virtual item of clothing fits an avatar representing a consumer, the other conditional on a determination that the virtual clothing does not fit the avatar representing the consumer. Under a broad but reasonable interpretation, claim 1 covers two alternative methods, one if the surface of a virtual item of clothing fits, the other if clothing does 5 Appeal 2016-003520 Application 13/490,016 not fit. See Ex parte Schulhauser, No. 2013-007847, 2016 WL 6277792, at *4 (PTAB Apr. 28, 2016) (precedential) (discussing construction of conditional limitations in method claims). In light of the claim’s conditional language, the prior art need only teach one of the two alternatives, not both. See id. Therefore, at least the positioning and displaying steps of claim 1 are not required and, therefore, are not part of our analysis of claim 1 under Alice. In connection with the step of generating a three-dimensional virtual reality graphical environment, the Specification fails to provide a definition for the phrase. Therefore, under a broad interpretation, the step of generating a three-dimensional virtual reality graphical environment including an avatar of the consumer and three-dimensional virtual items of clothing is satisfied by the combination of the listed elements, i.e., an avatar and items of clothing, the avatar and clothing represented by “a collection of data (points and other information).” Spec. 136. Addressing the step of determining whether the surface of the virtual item of clothing fits around a predefined area of the surface of the avatar, we find no requirement the determination is based on attempting to wrap the virtual clothing around the avatar or fit the avatar into the virtual clothing. Therefore, under a broad interpretation, the determination may be accomplished by some other process such as comparing the consumer measurements (e.g., waist size) to the size of the actual item of clothing corresponding to the selected virtual item of clothing. Under our construction, claim 1 recites a method comprising, inter alia, the steps of (1) receiving (a) an image of a consumer’s face and (b) measurements of the consumer’s body; (2) generating a three-dimensional 6 Appeal 2016-003520 Application 13/490,016 avatar of the consumer based on the image and measurements; (3) generating a three-dimensional virtual reality graphical environment including the avatar of the consumer and three-dimensional virtual items of clothing; (4) receiving a selection from the consumer of a virtual item of clothing comprising a surface that correlates in size to an actual item of clothing4; (5) determining whether the surface of the virtual item of clothing fits around a predefined area of the surface of the avatar; and (6) wherein if it is determined that the surface of the virtual item of clothing does not fit around the predefined area of the surface of the avatar, displaying a message to the consumer indicating that the virtual item of clothing does not fit the avatar. That is, claim 1 is equivalent to determining a selected item of clothing is too small to fit a consumer. Yet the recited steps involve no more than abstract concepts that could be performed in the human mind, or by a human using a pen and paper, without the need of any computer or other machine. “[A] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372—73 (Fed. Cir. 2011); see also Gottschalkv. Benson, 409 U.S. 63, 67 (1972) (“[phenomena of nature . . ., mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Moreover, mental processes remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen 4 Appellant’s Specification discloses “an actual item of clothing for sale by a physical store.” Spec. 124. Should prosecution be continued, the Examiner may want to consider whether the claim limitation “actual item of clothing” renders the independent claims indefinite under 35 USC § 112, second paragraph. 7 Appeal 2016-003520 Application 13/490,016 and paper. CyberSource, 654 F.3d at 1375 (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.”). In particular, receiving steps (l)(a), (l)(b), and (4) are conventional information gathering steps and message displaying step (6) is insignificant post-solution activity. Consistent with the Specification (Spec. 122), avatar generating step (2) creates a three-dimensional “graphical representation of a user or the user’s alter ego or character.” Presumably, although three- dimensional computer graphics using three-dimensional modeling may be employed to generate the avatar (Spec. 134—35), as also disclosed, “three dimensional models can be created by hand” (Spec. 136). Virtual clothing generating step (3) similarly includes creating a three-dimensional graphical representation. Spec. 124. Thus, generating steps (2) and (3) may be performed manually and, accordingly, at most correspond to conventional information gathering steps (i.e., the input of manually created data points and other information to, for example, a processing unit). Alternatively, if the generating steps include automated generation of the collection of points constituting the avatar and clothing, consistent with Appellant’s characterization of appropriate software,5 the steps are considered to be 5 The Specification provides few details of how to generate a three dimensional avatar, merely disclosing In stage 425, the [consumer inputted] data collected in stage 420 is processed so as to place it in a form or format for creating a user avatar in stage 430, wherein the avatar may comprise a three 8 Appeal 2016-003520 Application 13/490,016 conventional data analysis. Thus, the generating steps do not contain any enhancing limitations that can be said to entail an unconventional technological solution to a technological problem. See Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300-01 (Fed. Cir. 2016) (“the claim’s enhancing limitation necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality. The enhancing limitation depends not only on the invention’s distributed architecture, but also depends upon the network devices and gatherers—even though these may be generic- working together in a distributed manner.”). Fit determining step (5), as broadly interpreted supra, may be performed by routine information comparison (i.e., determining whether the applicable measurements are less than that of the actual item of clothing as indicated by, e.g., the clothing’s size). Referencing the Supreme Court decision in Alice, Appellant argues that although the Alice Court did not provide a definition of “abstract idea,” the Court’s reasoning in Alice implies that it intended to limit the concept of “abstract ideas” to those concepts which are fundamental and long prevalent, and to concepts which have been well-known and extensively used for hundreds of years. It is further a very reasonable alternative interpretation of Alice, given the opinion's strong emphasis on the risk hedging claims in Bilski, the “intermediated settlement” concept allegedly embodied in the claims at issue in Alice, and the repeated references to “economic practices,” “finance class,” dimensional graphical representation of one or more surfaces, wherein the surface may depict varying colors and patterns and wherein the surface may have a thickness. Further, the surface of the avatar may move and may have elasticity characteristics. Spec. 134. 9 Appeal 2016-003520 Application 13/490,016 “commerce,” and “the modem economy,” that the Supreme Court intended for “abstract ideas” to be limited primarily or entirely to financial methods. Br. 7. Pointing to the method steps recited in claim 1, Appellant maintains the pending claims “go way beyond the basic process of determining whether clothing fits a purchaser’s body [as found by the Examiner] and which have gone ignored by the Examiner’s (lack of) analysis.” Br. 11. Appellant argues the step of receiving an image of a consumer’s face, the avatar generating step, and, in particular, the three-dimensional virtual reality graphical environment generating step “has nothing to do with the basic process of determining whether clothing fits a purchaser's body. In fact, the basic process of determining whether clothing fits a purchaser's body can be accomplished without the creation of an entire three- dimensional virtual reality environment.” Br. 11—12. Appellant directs attention to benefits of creating an “entire three-dimensional virtual reality environment” as aiding the consumer in making shopping decisions with additional benefits disclosed at paragraph 17 of the Specification. Br. 12. We are unpersuaded. The Specification discloses only that there is a need for “a more efficient way of harnessing the power of the online shopping experience to accommodate consumers shopping for clothing online.” Spec. 16. Appellant’s argument that the claims go “beyond the basic process of determining whether clothing fits a purchaser’s body” by requiring “creation of an entire three-dimensional virtual reality environment” implies an overly narrow reading of the claim. As explained supra, creation of the three-dimensional virtual reality environment according to claim 1 is broadly interpreted to encompass the manual generation of points and other information representing a three- 10 Appeal 2016-003520 Application 13/490,016 dimensionalavatar and items of clothing. Likewise the determining step does not require virtual manipulation of the clothing with respect to the avatar (i.e., attempting to position the surface of the virtual item of clothing over the predefined area of the surface of the avatar) to determine if the clothing fits. Instead, the determining step could be reasonably performed by a simple comparison of consumer body measurements to clothing size. Thus, we are not persuaded the argued three-dimensional virtual reality environment or method of determining whether an item of clothing fits evidences claim 1 is not directed to an abstract idea. Furthermore, the argued additional elements or combination of elements sufficient to ensure that the claim amounts to “significantly more” than the abstract idea itself (i.e., an “inventive concept”) are factors considered under step 2 of the Alice framework, not step 1 as part of a determination of whether the invention is directed to a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2355. Appellant further argues, consistent with the decision in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) the “claimed invention covers a rather involved process and method that goes well beyond the basic idea of simply managing whether clothing fits a buyer, and is therefore patent eligible.” Br. 13. We find this argument unpersuasive. The claims in DDR Holdings were directed to a “challenge particular to the Internet,” and did not “broadly and generically claim ‘use of the Internet’ to perform an abstract business practice (with insignificant added activity.)” 773 F.3d at 1257, 1258. For example, in DDR, the claims involved, inter alia, “web pages displays [with] at least one active link associated with a commerce object associated with a buying opportunity of a selected one of a plurality of merchants.” Id. at 1249 (claim 19 of US 11 Appeal 2016-003520 Application 13/490,016 7,818,399). There is no such web page with an active link in claim 1. Rather, all that is required here is the input of a consumer’s image and size data, generation of a virtual reality graphical environment including an avatar and items of clothing, selection of an item of clothing, determination the surface of the virtual clothing item does not fit around the avatar (i.e., whether the clothing is the proper size and shape), and display of a message that the virtual item of clothing does not fit the avatar. The Specification supports a finding that each of these steps is conventional at least in that little or no detail is provided of how to perform the recited steps. For example, no details are provided about how to generate an avatar or virtual items of clothing or how a determination is made of whether the surface of the virtual item of clothing fits around a predefined area of the surface of the avatar. See, e.g., Spec. 126. We are also unpersuaded the “claimed invention . . . recites processes and structure that have NOT been well-known and extensively used for hundreds of years and that have nothing to do with financial methods.” Br. 14. A conclusion an invention is directed to an abstract idea does not require a finding the invention is well-known or has been used extensively. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714—15 (Fed. Cir. 2014) (concluding “showing an advertisement before delivering free content” is an abstract idea as a method of organizing human activity rather than an economic practice or financial method as argued). Instead, “any novelty in implementation of the idea is a factor to be considered only in the second step of the Alice analysis.” Ultramercial, 772 F.3d at 715. Furthermore, we disagree the invention is not directed to a fundamental economic practice that has been well-known and used 12 Appeal 2016-003520 Application 13/490,016 extensively. As found by the Examiner, the claims are directed to the basic process of determining whether clothing fits a purchaser’s body, i.e., “managing reviewing of clothing if it fits or not a buyer before purchasing it by the buyer and related requirements.” Final Act. 5. As discussed supra, each of the required steps of claim 1 are fundamental sales practices. In particular, the steps of receiving an image and body measurements are mere information gathering steps such as a salesperson might observe and ask of a customer. The generating steps are little more than the creation of mathematical models (e.g., the set of points defining the surfaces of a three- dimensional object) manipulable by, for example, a computer, to simulate the real-world consumer and clothing. It is conventional to simulate physical objects by values representing physical characteristics of the objects (such as the claimed consumer’s body measurement and clothing size) just as it is conventional to represent a count of the number of objects by a numeric value rather than the physical object themselves. The steps of receiving a selection is equivalent to a customer selecting a clothing item of interest (e.g., informing a salesman of a clothing selection). The determining step is merely comparing the size of the selected clothing item to the consumer’s measurements (e.g., foot size to shoe size) or actually trying-on the item to determine if the item of clothing fits the consumer. Finally, if the clothing item does not fit, the final “wherein” clause of claim 1 provides an appropriate notification (e.g., the consumer recognizes the clothing item is too small). Thus, although the recited steps are directed to making a determination about real-world objects by simulating those objects in a virtual environment, the recited steps merely simulate a method that has been well-known and extensively used for hundreds of years, i.e., selecting 13 Appeal 2016-003520 Application 13/490,016 clothing to see if it fits. Furthermore, we disagree the claimed invention has nothing to do with financial methods because, as disclosed by Appellant, the claims are directed to e-commerce and “using the Internet to purchase clothing.” Spec. 13. For the foregoing reasons, Appellant has not shown error in the Examiner’s Alice step one determination that claim 1 is directed to a patent- ineligible concept. Addressing step two, we “search for an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice, 134 S. Ct. at 2355 (alteration in original) (quotingMayo, 132 S. Ct. at 1294). Appellant argues claim l’s requirement of creating a three-dimensional reality world including the generation of an avatar and virtual items of clothing “recites ‘significantly more’ than the alleged basic idea of simply aiding a consumer in purchasing a product, as the Examiner has expressed in the Final Office Action.” Br. 16—17. We disagree, at least due to the following: the absence of persuasive evidence and/or the failure of the Specification to disclose that any of the steps are, for example, other than well-understood, routine, and conventional, improve the functioning of a computer itself, could only be implemented by a specialized machine, or otherwise add meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment. In particular, claim 1 is a method that does not recite being implemented on a computer. Nothing in claim 1 purports to improve computer functioning or “effect an improvement in any other technology or technical field.” Alice, 134 S. Ct. at 2359. Nor does claim 1 solve a 14 Appeal 2016-003520 Application 13/490,016 problem unique to the Internet. See DDR Holdings, 773 F.3d at 1257. The claim also is not adequately tied to “a particular machine or apparatus,” especially because it is not tied to any machine or apparatus. Bilski v. Kappos, 561 U.S. 593, 601-02 (2010). Accordingly, claim 1 does not satisfy step 2 of Alice. In view of the foregoing, we sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 101. For the same reasons, we also sustain the rejection of dependent claims 2—7, which are not argued separately. Because our reasoning differs somewhat from and/or adds to that of the Examiner, we designate the affirmed rejection as a new ground of rejection. NEW GROUND OF REJECTION Claims 8 and 15 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter for the reasons discussed supra in connection with claim 1. However, in newly rejecting these claims, we additionally address alternative conditional steps only performed if the surface of the virtual item of clothing fits around the predefined area of the surface of the avatar, steps that were not needed to be performed according to method claim 1. In particular, Beauregard claim 8 and apparatus claim 15 respectively recite instructions and a computer system required to be capable of performing the recited conditional steps. However, the additional steps of (i) positioning the surface of the virtual item of clothing over the predefined area of the surface of the avatar and (ii) displaying the virtual item of clothing over the predefined area of the surface of the avatar for viewing by 15 Appeal 2016-003520 Application 13/490,016 the consumer do not affect a conclusion that claims 8 and 15 are directed to subject matter that is judicially-excepted from patent eligibility under § 101 In particular, the positioning step is the virtual equivalent of an actual consumer putting on a physical item of clothing. The displaying step provides for viewing of the virtual clothing item on the avatar, the equivalent of, for example, a consumer, wearing a clothing item and looking in a physical mirror. Appellant’s Specification fails to provide details of how the virtual item of clothing is positioned on the avatar or the processing required to effectuate display of the avatar wearing the clothing item. Accordingly, inclusion of these steps fails to change our conclusion that claims 8 and 15, like claim 1, are directed to abstract ideas. Furthermore both the positioning and display steps are, at most, insignificant post-solution activity and, therefore do not change our conclusion that the claims as a whole do not amount to significantly more than the abstract idea. Although claim 15 recites additional structures, to wit, memory storage, a network connection device, and a processing unit operative to perform the recited steps, such structures are merely components of a generic computer (e.g., Spec. 138, Fig. 6) and, therefore, do not affect our conclusion. See, e.g., DDR Holdings, 773 F.3d at 1256 (“[Ajfter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible. The bare fact that a computer exists in the physical rather than purely conceptual realm ‘is beside the point.’” (citation omitted)). Accordingly, we newly reject independent claims 8 and 15 under 35 U.S.C. § 101. For the same reasons, we also reject dependent claims 9-14 and 16—18. 16 Appeal 2016-003520 Application 13/490,016 35 U.S.C.§ 103 Appellant argues neither Lim (referenced by the Examiner and Appellant as “Ho”) nor the cited portions of Kunigita “disclose[s] a three- dimensional avatar of the consumer, a three-dimensional virtual reality graphical environment including the avatar of the consumer and three- dimensional virtual items of clothing.” Br. 21,24. The Examiner finds Kunigita discloses generating a “three-dimensional image of the body of the user in accordance with the body size of the user, superimposing an object of the commodity on the object of the user, and mapping a texture of the commodity selected by the user onto the object of the commodity.” Final Act. 8 (quoting Kunigita, Abstract). The Examiner relies on Lim for disclosing “that the generated avatar is a three-dimensional avatar” and for “generat[ing] a three dimensional virtual reality graphical environment including the avatar of the consumer and three dimensional virtual items of clothing.” Id. In particular, the Examiner cites Lim page 3, lines 1—4; page 38, lines 1—10; page 52, lines 5—15; page 72, lines 1—8; and page 148, lines 4—7. Final Act. 8—10; Ans. 4—7. Furthermore, in response to Appellant’s arguments, the Examiner identifies portions of Kunigita disclosing an “avatar of the user.” Ans. 5 (citing Kunigita 48, 57). We have reviewed the cited portions of Kunigita and Lim and agree overwhelmingly with, and adopt as our own, the Examiner in finding the combination of Kunigita and Lim teaches or suggests the disputed limitations. Accordingly, we sustain the rejection of claims 1—18 under 35 U.S.C. § 103(a) over Kunigita, Moses, and Lim. DECISION 17 Appeal 2016-003520 Application 13/490,016 We affirm the Examiner’s decision rejecting claims 1—7 under 35 U.S.C. § 101 as directed to non-statutory subject matter, and we designate our affirmance of claims 1—7 as a new ground of rejection. We newly reject independent claims 8—18 under 35 U.S.C. § 101 as directed to non-statutory subject matter. We affirm the Examiner’s decision rejecting claims 1—18 under 35 U.S.C. § 103(a) over Kunigita, Moses, and Lim. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides: When the Board enters such a non-final decision, Appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground[s] of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground[s] of rejection [are] binding upon the Examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground[s] of rejection designated in [this] decision. Should the examiner reject the claims, [Ajppellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of 18 Appeal 2016-003520 Application 13/490,016 rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 37 C.F.R, $ 41.50(b) 19 Copy with citationCopy as parenthetical citation